Where would case be tried?

[MP274]

What is the name of your state (only U.S. law)? NY

Hi, I have a general question about cases involving copyright infringement. If it turns out that the defendant lives in a different state than the copyright holder, where does the case have to be tried? I had always heard that most cases had to be tried in the state where the defendant lives. Recently, however, I have heard about some copyright cases that are being conducted in the plaintiff’s home state. Or maybe I misunderstood. Can anyone clarify this? Are the rules different because copyright cases are federal cases?

I’m sorry if this is a basic question, but lately I’ve been hearing a lot of conflicting information about copyright cases.

Thanks in advance for any information.What is the name of your state (only U.S. law)?

 

[justalayman]

as I understand it, an original claim must be filed in the federal courts but a counterclaim may be within a state court or federal court

 

[quincy]

Although you are correct, MP274, that a copyright infringement action is most commonly filed in the state where the defendant resides, as the defendant's home-state courts have personal jurisdiction over their state residents, a defendant could potentially be forced to defend an infringement action in the plaintiff's home state, if the plaintiff can establish that his state's court has personal jurisdiction over the out-of-state defendant. It is up to the plaintiff to make a prima facie case showing such personal jurisdiction exists.

Of course, if a defendant is served with a complaint filed against him in an out-of-state court, one of the defenses a defendant can raise is that the out-of-state court lacks jurisdiction over him, and the defendant can file a motion to dismiss. Whether the motion will be granted or denied will depend on the facts.

Personal jurisdiction is determined by weighing several factors: where the parties reside, where a defendant resides if both parties live in different states, where the event giving rise to the action arose, where the injury occurred and/or where it is felt, if the defendant had sufficient (at least minimum) contact with the plaintiff's home state at the time the action commenced. . . .

The Supreme Court has held that even non-physical contact with a plaintiff's state may be sufficient to establish jurisdiction over an out-of-state defendant and, in a fairly recent case, the serving of an infringement complaint upon the defendant when the defendant was in the plaintiff's home state was found sufficient by a court to establish personal jurisdiction over the out-of-state defendant.

However, the reason a plaintiff will often decide to file in the defendant's home state instead of his own, even if facts could be sufficient to establish that his home-state court has personal jurisdiction over the out-of-state defendant, is to avoid a jurisdictional fight (which would be almost inevitable and would add substantially to the already high costs of litigation) and to avoid the risk of having his suit dismissed, thereby potentially running into statute of limitations problems with a refiling of the case.

Any federal district court, regardless of the state, will have subject matter jurisdiction over a copyright infringement matter.


Edit to add: You may wish, MP274, to look at a New York copyright infringement case argued earlier this year. It discusses the factors that are looked at by New York courts when deciding if personal jurisdiction exists over an out-of-state defendant. See Penguin Group USA, Inc v American Buddha, 609 F.3d 30, 95 US P.Q.2d (BNA) 1217 (2nd Cir. 2010).

 

[BOR]

as I understand it, an original claim must be filed in the federal courts

State courts are not generally divested of federal question complaints. Unless federal law directly damands filing a Copyright suit in federal court, a state court can entertain such.

One case I remember was Charles Dowd box, about Labor law.

but a counterclaim may be within a state court or federal court

No, if a complaint is filed in federal court, a response has to be filed in the same court.

If a complaint is filed in state court and it is Petitioned for removal to federal court, a Motion to Remand is still filed in federal court where it was Petitioned to be removed, not the state court where it came from.

No doubt any Petition for Removal would be granted as an "Original Jurisdiction" question of law??

 

[quincy]

Copyright law in the U.S. is a federal law and, under 28 USC §1338, federal courts are given exclusive jurisdiction over actions involving the rights held by a copyright owner. A copyright owner must file any copyright infringement suit, therefore, in a federal rather than in a state court.

However, for copyright disputes that do not involve the rights of a copyright holder (ie. a dispute that is contractual in nature, like the payment of royalties), then it is possible to handle the action in a state court.

 

[MP274]

as I understand it, an original claim must be filed in the federal courts but a counterclaim may be within a state court or federal court

Hi, justalayman, thanks for your response. I have never heard this about counterclaims. That is interesting.

 

[MP274]

Hi, quincy, thank you very much for all the information you have given me, both here and in my other thread. It has been very helpful and I really appreciate it.

Thanks again!

 

[MP274]

State courts are not generally divested of federal question complaints. Unless federal law directly damands filing a Copyright suit in federal court, a state court can entertain such.

One case I remember was Charles Dowd box, about Labor law.

Hi, BOR, from what I've heard, only federal courts can handle copyright cases, although I'm not a lawyer so I could be wrong, of course.

 

[MP274]

Copyright law in the U.S. is a federal law and, under 28 USC §1338, federal courts are given exclusive jurisdiction over actions involving the rights held by a copyright owner. A copyright owner must file any copyright infringement suit, therefore, in a federal rather than in a state court.

However, for copyright disputes that do not involve the rights of a copyright holder (ie. a dispute that is contractual in nature, like the payment of royalties), then it is possible to handle the action in a state court.

Hi, quincy, that is an interesting point about the rights of a copyright holder for contracts, payments, etc., being handled by a state court. I hadn't thought of that.

Thanks again for all the information.

 

[quincy]

You're welcome, MP274.

As a note to, perhaps, clarify the comment justalayman made on counterclaims:

A state court cannot hear a counterclaim made by a defendant involving copyrights (those involving the rights of a copyright holder to reproduce, adapt, distribute, perform and display a work) unless the original action was filed by the plaintiff in a state court and did not involve rights of a copyright holder.

A federal district court has original jurisdiction and exclusive jurisdiction over copyright infringement claims, so a plaintiff must file any copyright infringement action in a federal district court, and counterclaims made by a defendant must also be heard in the federal district court where the claim was filed by the plaintiff.

If, however, a plaintiff files a suit in a state court for a matter that is not over rights held by a copyright owner, and the defendant files a counterclaim that does involve federal law and copyright infringement or rights held by a copyright owner, then it becomes possible for the state court to hear both actions (even though state courts cannot generally hear copyright infringement actions).

You can check out the U.S. Supreme Court decision in Holmes Group, Inc v Vornado Air Circulation Systems, Inc, 535 US 826, 122 S.Ct. 1889, 153 L.Ed.2d 13 (2002) (this, by the way, involved a patent infringement counterclaim, and federal district courts have exclusive jurisdiction over patent as well as copyright infringement claims).

There are only two ways that cases may be sent from a federal district court to a state court - a remand to the state court from which the case was originally removed or through a transfer of the case to a state court pursuant to a state statute enabling such a transfer. A court, in other words, cannot "send back" a case to a court that it never came from or to a court that is a "stranger" to the action. A state court must have some prior connection to the original litigation.

So, both justalayman and BOR are correct, but BOR interpreted justalayman's statement differently than I believe justalayman intended.

 

[justalayman]

So, both justalayman and BOR are correct, but BOR interpreted justalayman's statement differently than I believe justalayman intended.

yes. thanks. Your citation was the basis of my statement and your expansion of my simplistic statement states my thoughts at the time.

 

[quincy]

You're welcome, just. How you meant it is how I took it, and I only saw the different interpretation when BOR posted, so I thought it might need some further explanation.

 

[justalayman]

You're welcome, just. How you meant it is how I took it, and I only saw the different interpretation when BOR posted, so I thought it might need some further explanation.

I admit my response was lacking. One of the few times I am brief and it bites me in the butt. I guess it's back to 500+ word responses for me

 

[quincy]

Ha.

I rarely limit myself to even 500 word responses if there is any way I can make my responses longer, just to ensure I avoid the butt-biting.

(I cannot think of any way to make this particular post longer, however. . . )